Defensive publication
A defensive publication or blocking publication (Engl. Defensive publication or defensive disclosure ) is the targeted publication actually patentable technical content or inventions to the creation of art as a strategy in the intellectual property law . The invention becomes known with a defensive publication and thus its patentability or property right expires due to the fact that it is no longer new. At the same time, the expansion of the state of the art increases the “inventive step” required by patent law for other, obvious inventions.
A defensive publication can ensure the permanent free use of an invention and is often used in a targeted manner to preserve one's own freedom to operate . In conjunction with other protective instruments, such as the registration of patents or other protective rights or the confidentiality of trade secrets , the defensive publication forms an additional component of a holistic intellectual property management strategy.
introduction
Defensive publication as a strategy in industrial property protection is used, for example, in
- small further developments (patent application too expensive),
- Innovations in "fast markets" (patent granting process slower than development),
- poor verifiability of an infringement of property rights (enforcement of property right time-consuming),
- or if the enforcement of exclusive rights is not sought from the outset
- or as part of an intellectual property management strategy that solves problems caused by the secrecy of patent applications for up to 18 months after filing and Article 54 (3) and Article 56 EPC (European Patent Convention)
- thus as an accompanying measure to patent applications by also making a defensive publication after submitting your own patent application.
A defensive publication has the advantage that it secures the rights of use to one's own invention with comparatively little expenditure of resources. The fast process and the low costs stand in particular against the often very complex process of applying for patents and other property rights. However, with the implementation of a defensive publication, the enforcement of exclusive rights is waived and therefore no license or other property rights revenues are to be expected. Defensive publications are therefore often used where, on the one hand, enforcement of a patent is difficult or its cost-benefit ratio is unfavorable and, on the other hand, secrecy cannot be guaranteed over the long term.
Defensive publications are also considered a suitable means against so-called patent trolls . This generally includes people or companies who exploit patents by granting a license or enforce them through patent infringement proceedings without being the inventor of the subject matter or using it. In many cases it is a question of legally dubious patents on known or seemingly trivial technologies. Appropriate defensive publication can prevent such patents from being granted.
Furthermore, defensive publications are also interesting for users who do not seek patenting or confidentiality of their inventions, but instead want to make them permanently available to the general public for free use. Research institutions, public institutions and the open source movement are examples of such users.
Another example of defensive publications is the safeguarding of traditional knowledge from different cultures in specially set up databases, for example the Traditional Knowledge Digital Library for the documentation of Indian medical systems Ayurveda, Unani, Siddha and Yoga. With such databases, states like India respond to the patenting of genetic resources and knowledge that have been common property in certain cultures for centuries ( biopiracy ). Up to now, traditional use has been difficult to prove because traditional knowledge is in many cases only passed down orally and, in particular, was not or only insufficiently accessible to the patent offices. The newly created databases are intended to close this gap and, in particular, to make it easier for patent examiners to access this knowledge. There are also commercial databases, such as IP.com, Prior Art Publishing, protegas or Research Disclosure, which offer companies and private individuals the possibility of defensive publications for a fee.
legal framework
Patent law
The mode of action of defensive publications arises indirectly from legal regulations, international agreements and case law on the registration of patents and other property rights. In Germany, the patent law requires, as a basic requirement for the patentability of an invention, that it is new, involves an inventive step and is commercially applicable ( Section 1 (1) PatG). The decision as to whether something is 'new' and therefore worthy of protection is determined by the term state of the art. This includes all knowledge that has been made accessible to the public through written or oral description, through use or in any other way ( Section 3 (1) PatG). When examining novelty, it is not permissible to combine different parts of the prior art.
In addition, defensive publication has an impact on the patentability of later, similar inventions. These inventions are no longer considered patentable if they do not involve an inventive step compared to the state of the art, i.e. H. are obvious to a person skilled in the art from the state of the art ( Section 4 PatG). The detriment to inventiveness results not only from the defensive publication, but from the combination of the defensive publication with the rest of the state of the art (so-called mosaic comparison). In summary: A defensive publication expands the state of the art and thus:
- The destruction of the novelty required by patent law of later patent applications with the same content, for example patents.
- The increase in the “inventive step” required by patent law in subsequent, obvious patent applications, for example patents.
Employee invention law
Many inventions arise in the context of an employment relationship and must be treated in Germany as so-called service inventions according to the Employee Invention Act (ArbNErfG). The ArbNErfG is intended to ensure a balance of interests between the employer and the employee and obliges the employee to immediately report the service invention ( § 5 ArbnErfG) and the employer to use or release the invention ( § 6 , § 7 , § 8 ArbnErfG). The possibility of carrying out a defensive publication is not explicitly mentioned in the ArbNErfG, but is after use according to. Section 13 (2) possible with the employee's consent.
It is widespread in practice that employers agree to pay the inventor a one-off fixed amount to cover all remuneration claims as well as legal formal obligations (incentive system). This provides a legally sound basis for carrying out a defensive publication. When measuring the inventor remuneration for a defensive publication, one can orientate oneself on the exploitation of the invention in the case of blocking patents.
International validity
The basis for the international validity of a defensive publication are various national patent laws, international agreements and the respective national case law in the various countries. The patent law terms "novelty" and "state of the art" play a central role. However, some of these terms are defined differently in the various legal texts. For example, a relative novelty concept applies in US patent law and an absolute novelty concept in the European legal system (see also table).
In some countries, a so-called grace period also applies, which allows inventors to apply for a patent within this period despite the publication of their own idea. In Germany there is no grace period for patents. However, there is a grace period of six months for utility models. The following table illustrates the main differences between the patent law systems in Europe, the USA and Japan - the three regions of the world with the strongest patent activity - relevant to defensive publications:
| Europe | United States | Japan | |
|---|---|---|---|
| Concept of novelty | Absolute novelty (Art 54 EPC), i.e. H. Publicly accessible knowledge (written, oral, prior use and in any other way) of the invention is detrimental to novelty | Relative novelty (§102 US PatG), i.e. H. There are restrictions on the concept of novelty, for example an oral announcement of the invention in another US country or its use there are not considered to be detrimental to novelty. | Absolute novelty |
| Relevant examination time | Registration day - first-to-file principle | Day of Invention - first-to-invent principle | Registration day - first-to-file principle |
| Grace period | No | 12 months | 6 months |
Implementation forms
In general, there are no statutory regulations on how to carry out effective defensive publications. Only in the USA is there an official form for filing defensive publications (SIR; Statutory Invention Registration). In order for a disclosure to actually be effective as a defensive publication at a later date, the following points are essential:
- Uniqueness of the publication date,
- Proof that the content was not subsequently changed,
- Sufficient description of the invention from which its structure or its mode of operation can be understood by a person skilled in the art, or in which all relevant details are described.
Some common forms of publication and their characteristics are listed in the following overview:
| Publication form | features |
|---|---|
| Printed publication in a medium such as a magazine or textbook. |
|
| Publication on the Internet , for example on the company's own website or with a commercial database provider . |
|
| Prior use , for example for presentations or exhibitions at trade fairs |
|
Depending on the desired effect, it can make sense to publish in such a way that the publication is widespread and easily researchable, for example in order to prevent competitors from applying for a property right to the technical teaching described in advance. A wide distribution also offers patent examiners the opportunity to gain knowledge of the publication. However, it can also be strategically desired to publish as “hidden” as possible in order not to reveal internal knowledge to competitors, or only with great effort. To a certain extent, this strategy combines the benefits of secrecy with the security of a defensive publication. However, if you hide your defensive publication in such a way that nobody can find it, you run the risk that your publication will not be recognized as state of the art and thus be worthless.
Since a public announcement of an invention destroys its patentability, the use of defensive publication should be well thought out and strategically targeted.
Application examples
Granting of property rights unlikely
A company is developing a technology and would like to have it protected by the strongest possible property right (for example a patent). However, research reveals that it is highly unlikely that this intended patent will be granted by the patent offices. There can be various reasons for this. For example, there is already a great deal of state of the art in this area and it is unclear whether the invention has enough “inventive step” compared to the state of the art, or the technology falls into areas that are not patentable or can only be patented under very specific conditions (for example Software, biotechnology, medical procedures etc.). Now there are very high expenditures for the application of a patent compared to very low chances of success. However, since it cannot be completely ruled out that patenting is possible, a defensive publication will in any case protect the idea from third-party prohibition rights .
Edge ideas / further developments
In a highly competitive market, a company holds a strategically important patent. Competition and general research activities inevitably lead to the invention of minor improvements and changes to the technology protected by the patent. These offer competitors the chance to apply for patents that are very close to their patent in terms of content. A separate patenting of each small development goes beyond the financial framework of the company (this is often the case with small companies). In order to strengthen the strategically important patent and to protect it from being “entwined” or “perforated” by foreign patents, it can make sense to secure the smaller improvements by means of defensive publications.
Protection against obvious patent applications
After applying for a patent, the documents are kept under lock and key by the patent office for 18 months and then published. From the filing date, a patent application offers protection against the granting of third-party patent applications that are "not new" in terms of patent law compared to the earlier application. The novelty check involves a 1: 1 comparison of two fonts, i.e. H. other patent applications cannot be granted if all aspects of the foreign application emerge from the earlier application. "Obvious" patent applications can still be granted until the earlier patent specification is disclosed. When checking for obvious inventions, a so-called mosaic check is carried out, i. H. several documents are considered and the invention must not result from the combination of the contents for a person skilled in the art. The parallel execution of a defensive publication after filing a patent application protects against obvious third-party patents.
literature
- Stefanie Pangerl: Defensive Publishing: Freedom of action and the appropriation of innovation gains. 1st edition Wiesbaden: Gabler, 2009. Dissertation Technical University of Munich. ISBN 978-3-8349-1758-4
- Ralf-Thorsten Henn: Defensive Publishing . Vol. 22: Intellectual property and competition. Cologne: Carl Heymanns, 2010 dissertation University of Augsburg. ISBN 978-3-452-27425-0
Web links
- Statutory Invention Registration (SIR)
- http://i3pm.org/Event-1/Paul_Rosenich_Defensive_Publication_Indispensable_Tool_for_IP-Managers.pdf
- http://patentepi.com/de/epi/download/370cd487-7db6-4307-a999-91b8663de6b3
Individual evidence
- ^ Ralf-Thorsten Henn: Defensive Publishing . Vol. 22: Intellectual property and competition . P. 31–36 Cologne: Carl Heymanns, 2010. Dissertation University of Augsburg. ISBN 978-3-452-27425-0
- ↑ David EF Slopek: Defensive Publishing - Distribution, function strategies . In: GRUR (2009), issue 9, pp. 816–819
- ^ Ralf-Thorsten Henn: Defensive Publishing . Vol. 22: Intellectual property and competition . Cape. 5. Cologne: Carl Heymanns, 2010. Dissertation University of Augsburg. ISBN 978-3-452-27425-0